1. Tanada v. Angara, G.R. No. 118295.

May 2, 1997

Facts: Petitioners herein among others are Members of Congress (lower & upper). The respondents, among others, are Members of the Senate who concurred in the ratification by the
President of the Philippines of the agreement establishing the world trade organization and cabinet members. Respondent DTI Secretary Navarro, representing the Government of the
Republic of the Philippines, signed in Marrakesh, Morocco, the Final Act Embodying the Results of the Uruguay Round of Multilateral Negotiations (The WTO agreement) and was
concurred by Senate by Congress. Among other provisionis Annex 1C the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which provides each Member
shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property. In this wise
however, petitioners aver that paragraph 1, Article 34 (Relating to Patent Process – Burden of Proofs) of the General Provisions and Basic Principles of the Agreement on TRIPS intrudes
on the power of the Supreme Court to promulgate rules concerning pleading, practice and procedures particularly the rules on evidence.

From the assailed provision, a WTO Member is required to provide a rule of disputable presumption that a product shown to be identical to one produced with the use of a
patented process shall be deemed to have been obtained by the illegal use of the said patented process, (1) where such product obtained by the patented product is new, or (2) where
there is “substantial likelihood” that the identical product was made with the use of the said patented process but the owner of the patent could not determine the exact process used in
obtaining such identical product. The “burden of proof” contemplated by Article 34 can be understood as the duty of the alleged patent infringer to overthrow such
presumption.Regardless of such presumption, the patent owner still has the “burden of proof” and still has tointroduce evidence of the existence of the alleged identical product, the fact
that it is “identical” to the genuine one produced by the patented process and the fact of “newness” of the genuine product or the fact of “substantial likelihood” that the identical product
was made by the patented process.

Issue: Whether or not the assailed provisions of the Agreement interfere with the exercise of judicial power of SC in promulgating rules on evidence.

Held: The Court explained that the foregoing should really present no problem in changing the rules of evidence as the present law on the subject, Republic Act No. 165, as amended,
otherwise known as the Patent Law, provides a similar presumption in cases of infringement of patented design or utility model.

“SEC. 60. Infringement. - Infringement of a design patent or of a patent for utility model shall consist in unauthorized copying of the patented design or utility model
for the purpose of trade or industry in the article or product and in the making, using or selling of the article or product copying the patented design or utility model. Identity or
substantial identity with the patented design or utility model shall constitute evidence of copying.”

Moreover, it should be noted that the requirement of Article 34 to provide a disputable presumption applies only if (1) the product obtained by the patented process is NEW or
(2) there is a substantial likelihood that the identical product was made by the process and the process owner has not been able through reasonable effort to determine the process used.
Where either of these two provisos does not obtain, members shall be free to determine the appropriate method of implementing the provisions of TRIPS within their own internal
systems and processes.

2. Pearl and Dean vs. Shoemart, G.R. No. 148222. August 15, 2003

FACTS: Pearl and Dean is a corporation engaged in the manufacture of advertising display units referred to as light boxes and these light boxes were marketed under the trademark
Poster Ads. Pearl and Dean entered into a contract with Shoemart, Inc. for the lease and installation of the light boxes in SM North Edsa. However, due to construction constraints,
Shoemart, Inc offered as an alternative SM Makati and SM Cubao.
          After Pearl and Dean’s contract was rescinded, exact copies of its light boxes were installed in various SM malls, fabricated by Metro Industrial Services and later by EYD Rainbow
Advertising Corporation. Pearl and Dean sent a letter to Shoemart and its sister company, North Edsa Marketing to cease using the light boxes and to remove them from the malls, and
demanded the discontinued used of the trademark “Poster Ads”.
          Unsatisfied with the compliance of its demands, Pearl and Dean sued Shoemart which was ruled by the trial court in their favor. On appeal, however, the Court of Appeals reversed
the trial court’s decision.
ISSUE: Whether Pearl and Dean’s copyright registration for its light boxes and the trademark registration of “Poster Ads” preclude Shoemart and North Edsa Marketing from using the
same.

HELD:
          No, Pearl and Dean secured its copyright under the classification class “o” work. This being so, its protection extended only to the technical drawings and not to the light box itself.
Pearl and Dean cannot exclude others from the manufacture, sale and commercial use over the light boxes on the sole basis of its copyright, certificated over the technical drawings. It
cannot be the intention of the law that the right of exclusivity would be granted for a longer time through the simplified procedure of copyright registration with the National Library,
without the rigor of defending the patentability of its “invention” before the IPO and the public.
          On the other hand, there has been no evidence that Pearl and Dean’s use of “Poster Ads” was distinctive or well known. “Poster Ads” was too generic a name to identify it to a
specific company or entity. “Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising, the very business engaged by Pearl
and Dean. Furthermore, Pearl and Dean’s exclusive right to the use of “Poster Ads” is limited to what is written in its certificate of registration. Shoemart cannot be held liable for the
infringement of the trademark.

3. Kho v. Court of Appeals, G.R. No. 115758. March 19, 2002

Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the issuance of a writ of preliminary injunctionagainst the respondents Summerville
General Merchandising and Company (Summerville) and Ang Tiam Chay.
Petitioner alleged that she is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case; that she also has patent rights on Chin Chun Su &
Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office
(PPO); and respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su and in similar containers.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan; that Shun Yi Factory authorized Summerville to register its tradename Chin Chun Su Medicated Cream with the PPO; and petitioner
obtained the copyrights through misrepresentation and falsification.
The trial court granted the application for preliminary injunction against respondents. Respondents moved for reconsideration, but the same was denied.
Respondents filed a Petition for Certiorari with the CA, praying for the nullification of the said writ of preliminary injunction issued by the trial court. The CA ruled in favor of
the respondents, ordering that the writ of preliminary injunction be set aside and declared null and void. The CA also directed the trial court to continue with the trial of the complaint.
Petitioner moved for reconsideration, but the CA denied the same.
The trial court went on to hear petitioner’s complaint for final injunction and damages. The trial court rendered a Decision, barring the petitioner from using the trademark
Chin Chun Su and upholding the right of the respondents to use the same, but recognizing the copyright of the petitioner over the oval-shaped container of the beauty cream.
Issue: W/N petition is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright and patent over the same.
Ruling: No. Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.In relation thereto, a trade name means the
name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of their creation.Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially applicable.
Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must
sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee her the right
to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the
reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark
thereto or used the same before anyone did.

4. Santos v. McCullough Printing Co., G.R. No. L-19439. October 31, 1964

Facts: This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code of the Philippines, allegedly on the unauthorized use, adoption and appropriation by
the defendant company ofplaintiff's intellectual creation or artistic design for a Christmas Card. The design depicts "a Philippine rural Christmas time scene consisting of a woman and a child
in a nipa hut adorned with a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appears the plaintiff's pen name, Malang."The complaint alleges that plaintiff
Mauro Malang Santos designed for former Ambassador FelinoNeri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question. The following year the
defendant McCullough Printing Company, without the knowledge and authority of plaintiff, displayed the very design in its album of Christmas cards and offered it for sale, for a price.
Issue; Won santos is entitled for protection the fact that he has not copyrighted his design.
Ruling: No. An intellectual  creation should be copyrighted within  the  periods  provided  by  law,  failure  of  which  renders  such  creation  public property.
For there to be a limited publications or prohibition, such fact must appear on the face of the design.  When the purpose is a limited publication, but the  effect  is  a  general 
publication,  irrevocable  rights  thereon  become  vested  in  the general public. Exclusive right of owner to publish limited to first publication unless copyrighted.-- The author of a
literary composition has a right to the first publication thereof. He has a right to determine whether it shall be published at all,   and  if  published,  when,  where,  by whom, and in  what
form. This exclusive right is confined to the first publication. Once published, it is dedicated to the public,   and the author loses, the exclusive right to control subsequent  publication by
others,  unless  the work is  placed  under the  protection of  the  copyright  law.

5. Joaquin Jr. et al vs. Drilon, et al, G.R. No. 108946. January 28, 1999

Facts: BJ Productions Inc. (BJPI) was the holder of copyright over the show Rhoda and Me. It holds rights over the show’s format and style of presentation. In 1991, BJPI’s president
Francisco Joaquin saw on TV RPN 9’s show It’s a Date, which isbasically the same as Rhoda and Me. He eventually sued Gabriel Zosa, the manager of the show It’s a Date. Zosa later sought
a review of the prosecutor’s resolution before the Secretary of Justice (Drilon). Drilon reversed the findings of the fiscal and directed him to dismiss the case against Zosa.

Issue: Whether or not the decision of Drilon is valid.

Held: Yes. The essence of copyright infringement is the copying, in whole or in part, of copyrightable materials as defined and enumerated in Section 2 of PD. No. 49 (Copyright
Law). Apart from the manner in which it is actually expressed, however, the idea of a dating game show is a non-copyrightable material. Ideas, concepts, formats, or schemes in their
abstract form clearly do not fall within the class of works or materials susceptible of copyright registration as provided in PD. No. 49.  What is covered by BJPI’s copyright is the
specific episodes of the show Rhoda and Me. Further, BJPI should have presented the master videotape of the show in order to show the linkage between the copyright show ( Rhoda
and Me) and the infringing show (It’s a Date). This is based on the ruling in 20 th Century Fox vs CA (though this has been qualified by Columbia Pictures vs CA, this is still good law).
Though BJPI did provide a lot of written evidence and description to show the linkage between the shows, the same were not enough. A  television show includes more than mere words
can describe because it involves a whole spectrum of visuals and effects, video and audio, such that non similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.

6. Pearl and Dean vs. Shoemart, supra

FACTS: This a petition for review on certiorari under Rule 45 of the Rules of Court, in which petitioner assails the decision of the Court of Appeals in reversing the decision of the
Regional Trial Court declaring private respondents Shoemart, Inc. (SMI) and North Edsa Marketing, Inc. (NEMI) liable for infringement of trademark and copyright, and unfair
competition. Pearl and Dean is a corporation in the manufacture of light boxes, which were manufactured by Metro Industrial Services. A copyright Registration was obtained in 1981.
These were marketed in the name of "Poster Ads". They also applied for a registration of trademark with the Bureau of Patents in 1983, but was only approved in 1988.
In 1985, petitioner had an agreement with respondent SMI to install these light boxes in their Makati and Cubao Branch, only the Makati Branch was able to sign the agreement.
In 1986, the contract was rescinded unilaterally by SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes in different SM city branches, including
Cubao and Makati, with association with NEMI, SMI's sister company. Petitioner requested SMI and NEMI to put down their installations of the light boxes, and payment of compensatory
damages worth P20M. Claiming that respondents failed to comply, they filed a case for infringement of trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.
ISSUES:
Whether or not there was a copyright, patent, or trademark infringement.
Whether or not there was an unfair competition.
RULING: There is no copyright infringement. Since the copyright was classified under class "O" works, which includes "prints, pictorial illustrations, advertising copies, labels, tags and
box wraps," and does not include the light box itself. A lightbox, even admitted by the president of Petitioner Company, was neither a literary nor an artistic work but an engineering or
marketing invention, thus not included under a copyright.
There is no patent infringement. Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone from manufacturing or commercially using the
same. Patent has a three-fold purpose: a) to foster and reward invention; b) promotes disclosures of invention and permit public to use the same upon expiration; c) stringent
requirements for patent protection to ensure in the public domain remain there for free use of the public.
The certificate of registration issued by the Director of Patents gives exclusive right to use its own symbol only to the description specified in the certificate. It cannot prevent
others to use the same trademark with a different description
Hence, the Court finds no reversible error committed by the Court of Appeals when it reversed the Regional Trial Court of Makati City.

7. Sambar v. Levi Strauss, 378 SCRA 364 (2002)

Facts: Levis sent a letter to the petitioner to stop the manufacturing of pants which contains the arcuate design of the Levis strauss, that is registered as a trademark in the Philippines,
but was not heeded by Petitioner.
Issue: WON Petitioner infringe the trademark/design of Levis Strauss
Ruling: Under Section 22 of RA 166, Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any goods, business or serviceon or in connection with which such use is likely to cause confusion or mistake
or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business…shall be liable to a civil action by the registrant for any or all of the
remedies herein provided.
In the case, although the court found differences in the two designs, these differences were not noticeable, colorable imitation enough to cause confusion among the public, was
sufficient for a trademark to be infringed. Therefore, they infringed the trademark of Levis Strauss.
8. Santos v. McCullough Printing Co., 12 SCRA 321 (1964)
9. Filipino Society of Composers v. Benjamin Tan, 148 SCRA 461 (1987

FACT: Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organized under the Corporation Law of the Philippines and registered with the Securities
and Exchange Commission. Said association is the owner of certain musical compositions among which are the songs entitled: “Dahil Sa Iyo”, “Sapagkat Ikaw Ay Akin,” “Sapagkat Kami
Ay Tao Lamang” and “The Nearness Of You.” On the other hand, defendant-appellee is the operator of a restaurant known as “Alex Soda Foundation and Restaurant” where a combo with
professional singers, hired to play and sing musical compositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any
license or permission from the appellant to play or sing the same. Accordingly, appellant demanded from the appellee payment of the necessary license fee for the playing and singing of
aforesaid compositions but the demand was ignored. Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement of copyright against defendant-
appellee for allowing the playing in defendant-appellee’s restaurant of said songs copyrighted in the name of the former.
ISSUE: The principal issues in this case are whether or not the playing and signing of musical compositions which have been copyrighted under the provisions of the Copyright Law (Act
3134) inside the establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines

RULING: Playing of music in dine and dance establishment which was paid for by the public in purchases of food and constitutes “performance for profit” within the Copyright Law.
Nevertheless, defendant cannot be held to have violated the Copyright Law because the composers of the contested musical compositions are deemed to have waived their rights in
favor of the general public because they have failed to comply with the regulation requiring an intellectual creation to be copyrighted within 30 days after publication.
10. Ching Kian Chuan vs. CA, G.R. No. 130360. August 15, 2001
11. Ching vs. Salinas, G.R. No. 161295. June 29, 2005
12. United Feature Syndicate v. Munsingwear, 179 SCRA 260 (1989)
13. In The Matter Of The Charges Of Plagiarism, Against Associate Justice Del Castillo, A.M. No. 10-7-17-SC. 2010

FACTS: On April 28, 2010, the Supreme Court issued a decision which dismissed a petition filed by the Malaya Lolas Organization in the case of Vinuya vs Romulo. Atty. Herminio Harry
Roque Jr., counsel for Vinuya et al, questioned the said decision. He raised, among others, that the ponente in said case, Justice Mariano del Castillo, plagiarized three books when the
honorable Justice “twisted the true intents” of these books to support the assailed decision. These books were: a. A Fiduciary Theory of Jus Cogens by Evan J. Criddle and Evan Fox-
Descent, Yale Journal of International Law (2009); b. Breaking the Silence: Rape as an International Crime by Mark Ellis, Case Western Reserve Journal of International Law (2006); and
c. Enforcing Erga Omnes Obligations by Christian J. Tams, Cambridge University Press (2005). As such, Justice del Castillo is guilty of plagiarism, misconduct, and at least inexcusable
negligence. Interestingly, even the three foreign authors mentioned above, stated that their works were used inappropriately by Justice Del Castillo and that the assailed decision is
different from what their works advocated.

ISSUE: Whether or not there is plagiarism in the case at bar.

HELD: No. There is no plagiarism. Even if there is (as emphasized by the Supreme Court in its ruling on the Motion for Reconsideration filed by Vinuya et al in 2011), the rule on
plagiarism cannot be applied to judicial bodies.

No Plagiarism. At its most basic, plagiarism means the theft of another person’s language, thoughts, or ideas. To plagiarize, as it is commonly understood according to Webster, is to take
(ideas, writings, etc.) from (another) and pass them off as one’s own. The passing off of the work of another as one’s own is thus an indispensable element of plagiarism. According to
Black’s Law Dictionary: Plagiarism is the “deliberate and knowing presentation of another person’s original ideas or creative expressions as one’s own.”

This cannot be the case here because as proved by evidence, in the original drafts of the assailed decision, there was attribution to the three authors but due to errors made by Justice del
Castillo’s researcher, the attributions were inadvertently deleted. There is therefore no intent by Justice del Castillo to take these foreign works as his own. But in plagiarism, intent is
immaterial.
On this note, the Supreme Court stated that in its past decisions, (i.e. U.P Board of Regents vs CA, 313 SCRA 404), the Supreme Court never indicated that intent is not material in
plagiarism. To adopt a strict rule in applying plagiarism in all cases leaves no room for errors. This would be very disadvantageous in cases, like this, where there are reasonable and
logical explanations.

On the foreign authors’ claim that their works were used inappropriately. According to the Supreme Court, the passages lifted from their works were merely used as background facts in
establishing the state on international law at various stages of its development. The Supreme Court went on to state that the foreign authors’ works can support conflicting theories. The
Supreme Court also stated that since the attributions to said authors were accidentally deleted, it is impossible to conclude that Justice del Castillo twisted the advocacies that the works
espouse.

No Misconduct. Justice del Castillo is not guilty of misconduct. The error here is in good faith. There was no malice, fraud or corruption.

No Inexcusable Negligence (explanation of Justice Del Castillo). The error of Justice del Castillo’s researcher is not reflective of his gross negligence. The researcher is a highly competent one. The
researcher earned scholarly degrees here and abroad from reputable educational institutions. The researcher finished third in her class and 4th in the bar examinations. Her error was merely due to
the fact that the software she used, Microsoft Word, lacked features to apprise her that certain important portions of her drafts are being deleted inadvertently. Such error on her part cannot be said
to be constitutive of gross negligence nor can it be said that Justice del Castillo was grossly negligent when he assigned the case to her. Further, assigning cases to researchers has been a long
standing practice to assist justices in drafting decisions. It must be emphasized though that prior to assignment, the justice has already spelled out his position to the researcher and in every sense,
the justice is in control in the writing of the draft.

With the advent of computers, however, as Justice Del Castillos researcher also explained, most legal references, including the collection of decisions of the Court, are found in electronic diskettes
or in internet websites that offer virtual libraries of books and articles. Here, as the researcher found items that were relevant to her assignment, she downloaded or copied them into her main
manuscript, a smorgasbord plate of materials that she thought she might need. She electronically cut relevant materials from books and journals in the Westlaw website and pasted these to a main
manuscript in her computer that contained the issues for discussion in her proposed report to the Justice. She used the Microsoft Word program. Later, after she decided on the general shape that
her report would take, she began pruning from that manuscript those materials that did not fit, changing the positions in the general scheme of those that remained, and adding and deleting
paragraphs, sentences, and words as her continuing discussions with Justice Del Castillo, her chief editor, demanded. Parenthetically, this is the standard scheme that computer-literate court
researchers use every day in their work.
14. In The Matter Of The Charges Of Plagiarism, Against Associate Justice Del Castillo, A.M. No. 10-7-17-SC. 2011
15. Habana et al vs. Robles et al G.R. No. 131522. July 19, 1999
16. Microsoft Corp vs. Maxicorp Inc, G.R. No. 140946. September 13, 2004
17. 20thCentury Fox v. CA, 164 SCRA 655 (1988)
18. Columbia Pictures, Inc. v. Court of Appeals, 237 SCRA 367 (1994)

Doctrine: The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must
present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former.
Facts: NBI filed with the RTC of Pasig 3 applications for search warrant against private respondentcharging them with violations of Sec. 56 of PD 49 (Decree on the Protection of
Intellectual Property) as amended by PD 1988.RTC Judge Austria consolidated the 3 applications and conducted a joint hearing where she made a personal examination of the applicant
(NBI Agent Reyes) and his witnesses.Finding just and probable cause, Judge Austria issued the search warrants.
Private Respondents filed their “Motion to Quash” the SW citing as grounds that there was no probable cause; the films in question are not protected by PD 1988 in that they were never
registered in the National Library as a condition precedent to the availment of the protection; the Motion Picture Association of America have not proven nor established their
ownership over the films; etc.
Judge Austria reversed her former stand initially finding probable cause for the issuance of the search warrants and ordered their quashal:
1. Private complainants uncertain of their ownership over the titles;
2. Complainants did not comply with the requirement that master tapes should be presented during the application for search warrants;
3. Complainants failed to comply with the deposit and registration requirements of PD 49 as amended by PD 1988.
Judge Austria also ordered the return of the items seized by virtue of the warrants.CA affirmed the quashal of the search warrants.
Issue: Whether or not the search warrants were issued with probable cause.
Ruling: No.
Ratio: BASIC REQUIREMENT for the validity of search warrants (in cases of this nature) is the presentation of the master tapes of the copyrighted films from which the pirated films are
supposed to have been copied (20th Century Fox Film Corp. vs. CA, 164 SCRA 655).
The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must
present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized
reproduction of the former. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the
existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. In applying for the search warrants the NBI charged violation of the entire provisions of
Section 56 of P.D. No. 49 as amended by P.D.No. 1988. This included not only the sale, lease or distribution of pirated tapes but also the transfer or causing to be transferred of any sound
recording or motion picture or other audio visual work. But even assuming, as appellants argue, that only the sale, lease, or distribution of pirated video tapes is involved, the fact
remains that there is need to establish probable cause that the tapes being sold, leased or distributed are pirated tapes, hence the issue reverts back to the question of whether there was
unauthorized transfer, directly or indirectly, of a sound recording or motion picture or other audio visual work that has been recorded

19. Columbia Pictures, Inc. v. Court of Appeals, 261 SCRA 144 (1996)

FACTS: In 1986, the Video Regulatory Board (VRB) applied for a warrant against Jose Jinco (Jingco), owner of Showtime Enterprises  for allegedly pirating movies produced and owned
by Columbia Pictures and other motion picture companies. Jingco filed a motion to quash the search warrant but the same was denied in 1987. Subsequently, Jinco filed an Urgent
Motion to Lift the Search Warrant and Return the Articles Seized. In 1989, the RTC judge granted the motion. The judge ruled that based on the ruling in the 1988 case of 20th Century Fox
Film Corporation vs CA, before a search warrant could be issued in copyright cases, the master copy of the films alleged to be pirated must be attached in the application for warrant.

ISSUE: Whether or not the 20th Century Fox ruling may be applied retroactively in this case.

HELD: No. In 1986, obviously the 1988 case of 20 th Century Fox was not yet promulgated. The lower court could not possibly have expected more evidence from the VRB and Columbia
Pictures in their application for a search warrant other than what the law and jurisprudence, then existing and judicially accepted, required with respect to the finding of probable cause.

The Supreme Court also revisited and clarified the ruling in the 20 th Century Fox Case. It is evidently incorrect to suggest, as the ruling in 20th Century Fox  may appear to do, that in
copyright infringement cases, the presentation of master tapes of the copyright films is always necessary to meet the requirement of probable cause for the issuance of a search warrant.
It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted fact is made through demonstration involving the
direct use of the senses of the presiding magistrate. Such auxiliary procedure, however, does not rule out the use of testimonial or documentary evidence, depositions, admissions or
other classes of evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in delay, inconvenience or expenses out of
proportion to is evidentiary value.

In fine, the supposed  pronouncement  in said case regarding the necessity for the presentation of the master tapes of the copy-righted films for the validity of search warrants should at
most be understood to merely serve as a guidepost in determining the existence of probable cause in copy-right infringement cases  where there is doubt as to the true nexus between the
master tape and the pirated copies. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a
sweeping and inflexible requirement in all or similar copyright infringement cases.
20. People v. Ramos, 83 SCRA 1 (1978)
21. Serrano Laktaw v. Paglinawan, 44 Phil. 855
22. Habana v. Robles, 310 SCRA 511 (1999)

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English For Today (CET). Respondent Felicidad Robles was the author of the book
Developing English Proficiency (DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a copy of petitioners' book. Habana et al. filed an action
for damages and injunction, alleging respondent’s infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being substantially familiar with the
contents of petitioners' works, and without securing their permission, lifted, copied, plagiarized and/or transposed certain portions of their book CET. On the other hand, Robles
contends that the book DEP is the product of her own intellectual creation, and was not a copy of any existing valid copyrighted book and that the similarities may be due to the authors'
exercise of the "right to fair use of copyrighted materials, as guides."
The trial court ruled in favor of the respondents, absolving them of any liability.  Later, the Court of Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co.,
Inc. In this appeal, petitioners submit that the appellate court erred in affirming the trial court's decision.
ISSUE: Whether Robles committed infringement in the production of DEP.
HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with the text of CET. The court finds that respondent Robles' act of lifting from the
book of petitioners substantial portions of discussions and examples, and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. In the case at bar,
the least that respondent Robles could have done was to acknowledge petitioners Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To
allow another to copy the book without appropriate acknowledgment is injury enough.

23. Converse Rubber Corp. v. Universal Rubber Products, Inc., G.R. No. L-27906. April 28, 1980

Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber
shoes and rubber slippers. Petitioner Converse Rubber Corporation filed its opposition to the application for registration on grounds that the trademark sought to be registered is
confusingly similar to the word "CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" as to likely deceive purchasers of products on which it is
to be used to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner.
In its Answer, respondent alleged that The petitioner's corporate name is 'CONVERSE RUBBER CORPORATION' and has been in existence since July 31, 1946; it is duly
organized under the laws of Massachusetts, USA and doing business at 392 Pearl St., Malden, County of Middlesex, Massachusetts;Petitioner is not licensed to do business in the
Philippines and it is not doing business on its own in the Philippines; and, Petitioner manufactures rubber shoes and uses thereon the trademarks 'CHUCK TAYLOR' and 'ALL STAR AND
DEVICE'. Eventually, the Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's application.
Issue: W/N respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to
which the name belongs.
Ruling: Yes. A trade name is any individual name or surname, firm name, device or word used by manufacturers, industrialists, merchants and others to identify their businesses,
vocations or occupations.As the trade name refers to the business and its goodwill, the trademark refers to the goods. The ownership of a trademark or tradename is a property right
which the owner is entitled to protect since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods. The modern
trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as fraud.
Here, from a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBER CORPORATION', it is evident that the word "CONVERSE" is the dominant word
which identifies petitioner from other corporations engaged in similar business. Respondent, in the stipulation of facts, admitted petitioner's existence since 1946 as a duly organized
foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for
registration of the trademark in question. Knowing, therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and is in fact the dominant word in petitioner's
corporate name, respondent has no right to appropriate the same for use on its products which are similar to those being produced by petitioner.
Another factor why respondent's application should be denied is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's
corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the prejudice of petitioner.
The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark of
petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes.

24. Mirpuri V. CA & Barbizon Corp, G.R. No. 114508. November 19, 1999
25. Fredco Manufacturing Corporation v. President And Fellows Of Harvard College (Harvard University), GR No. 185917, June 1, 2011

Facts: On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing under the laws of the Philippines, filed a Petition for Cancellation
of Registration No. 56561 before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against respondents President and Fellows of Harvard College (Harvard University),
a corporation organized and existing under the laws of Massachusetts, United States of America. Fredco alleged that the mark "Harvard" for t-shirts, polo shirts, sandos, briefs, jackets
and slacks was first used in the Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co., Inc. (New York Garments), a domestic corporation and Fredco's
predecessor-in-interest. On 20 April 2004, Harvard University filed an administrative complaint against Fredco before the IPO for trademark infringement and/or unfair competition
with... damages.

Issues: Harvard University was able to substantiate that it appropriated and used the marks "Harvard" and "Harvard Veritas Shield Symbol" in Class 25 way ahead of Fredco and its
predecessor New York Garment
Ruling: First, Fredco's registration of the mark "Harvard" and its identification of origin as "Cambridge, Massachusetts" falsely suggest that Fredco or its goods are connected with
Harvard University, which uses the same mark "Harvard" and is also located in Cambridge,... Massachusetts. Fredco's registration of the mark "Harvard" should not have been allowed
because Section 4(a) of R.A. No. 166 prohibits the registration of a mark "which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs Second,
the Philippines and the United States of America are both signatories to the Paris Convention for the Protection of Industrial Property (Paris Convention).

ARTICLE 8

A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark. (Emphasis supplied)

Thus, this Court has ruled that the Philippines is obligated to assure nationals of countries of the Paris Convention that they are afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that their own... countries are obligated to accord similar protection to Philippine nationals.

Harvard" is the trade name of the world famous Harvard University, and it is also a trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name

"Harvard" even without registration of such trade name in the Philippines.

This means that no educational entity in the Philippines can use the trade name "Harvard" without the consent of Harvard University. Likewise, no entity in the Philippines can claim,
expressly or... impliedly through the use of the name and mark "Harvard," that its products or services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latter's consent.

Principles:

As such, even before Harvard University applied for registration of the mark "Harvard" in the Philippines, the mark was already protected... under Article 6bis and Article 8 of the Paris
Convention. Again, even without applying the Paris Convention, Harvard University can invoke Section 4(a) of R.A. No. 166 which prohibits the registration of a mark "which may
disparage or falsely suggest a connection... with persons, living or dead, institutions, beliefs x x x."

26. Ang v. Teodoro, 74 Phil. 50

FACTS: Petitioner Ang filed an appeal by Certiorari before the Supreme Court seeking to reverse the judgment of Court of Appeals in reversing the decision of the CFI-Manila and
directing the Director of Commerce to cancel the registration of the trade-mark "AngTibay" in favor of said petitioner, and perpetually enjoining the latter from using said trade-mark on
goods manufactured and sold by her.
Respondent Teodoro together with Juan Katindig, as partners, has long been using ‘AngTibay’ both as trademark and tradename in the manufacture and sale of its slippers,
shoes and indoor baseballs when he formally registered it. Meanwhile, petitioner Ang registered the same trademark ‘AngTibay’ for its products of pants and shirts. Respondent moved
to cancel the registration of petitioner’s mark. The trial court found for petitioner Ang, on the grounds that the two trade-marks are dissimilar and are used on different and non-
competing goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that there had been no fraud in the use of the said trade-mark by the defendant be cause the
goods on which it is used are essentially different from those of the plaintiff
CA reversed the judgment, holding that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a
secondary meaning; that the goods or articles on which the two trademarks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes
a violation of sections 3 and 7 of Act No. 666.  Petitioner argues the validity of the mark being descriptive; that it had not acquired secondary meaning in favor of respondent; and that
there can be no infringement/unfair competition because the goods are not similar.
ISSUES:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair competition between unrelated goods.
RULING:                              
 (1) NO. The phrase “AngTibay” is an exclamation denoting administration of strength or durability. For instance, one who tries hard but fails to break an object exclaims,
“Angtibay!” (How strong!”) The phrase “angtibay” is never used adjectively to define or describe an object. One does not say, “angtibaysapatos” or “sapatosangtibay” is never used
adjectively to define or describe an object. One does not say, “angtibaysapatos” or “sapatosangtibay” to mean “durable shoes,” but “matibaynasapatos” or “sapatosnamatibay.” From all of
this we deduce that “AngTibay” is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be
appropriated as a trademark or tradename. In this connection we do not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (AngTibay) were not a descriptive term
and hence could be legally used and validly registered as a trademark.

(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of “secondary meaning” in trade-mark
parlance. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product. We have said that the phrase “AngTibay,” being neither geographic nor descriptive, was originally capable
of exclusive appropriation as a trade-mark. But were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation.

(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine whether
noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under two
different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class
if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user’s goods. They would
be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the
second user’s goods. The Court of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent’s registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for
pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent.

27. Etepha v. Director of Patents, G.R. No. L-20635. March 31, 1966

Facts: Wesmont sought to register the trademark “Atussin”, used in the treatment of cough but was objected by Etepha for it alleges that it so confusedly similar to its “Pertussin”, used
also in the treatment of cough, which was already registered as a trademark.
Issue: WON the registration of “Atussin” may cause confusion which will infringed the trademark “Pertussin”
Ruling: Under the law, confusion is likely between trademarks only if their over-all presentations in any of the particulars of sound, appearance, or meaning are such as would lead the
purchasing public into believing that the products to which the marks are applied emanated from the same source.
In the case, the two medicines have different styles of writing and methods of design, ( horizontal for Atussin and Artitically upward for Persusin), Atussin is a cough syrup, the
two medicine do not sound alike – when pronounced, and the contrast in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the
other, not even by persons unfamiliar with the two trademarks.
Hence, there was no infringement.

28. Unno Commercial Enterprises v. General Milling Corp., G.R. No. L-28554. February 28, 1983
29. Kabushi Kaisha Isetan v. IAC, 203 SCRA 583
FACTS: Petitioner Kabushi Kaisha Isetan is a foreign corporation organized and existing under the laws of Japan with business address in Tokyo, Japan. It is the owner of the trademark
"Isetan" and the "Young Leaves Design". The petitioner alleges that it first used the trademark Isetan on November 5, 1936. It states that the trademark is a combination of "Ise" taken
from "Iseya" the first name of the rice dealer in Kondo, Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First". The petitioner
claims to have expanded its line of business internationally from 1936 to 1974. The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34
classes of goods. On October 3, 1983, the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office.
Private respondent, Isetann Department Store, on the other hand, is a domestic corporation organized and existing under the laws of the Philippines with business address in Sta. Cruz,
Manila, Philippines. It claims that it used the word "Isetann" as part of its corporated name and on its products particularly on shirts in Joymart Department Store sometime in January
1979. The suffix "Tann" means an altar, the place of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two hands in cup that
symbolizes the act of offering to the Supreme Being for business blessing. The respondent registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine
Patent as well as with the Bureau of Domestic Trade.
The petitioner filed with the Phil. Patent Office petitions for the cancellation of Certificates of Supplemental Registration stating that except for the additional letter "N" in the word
"Isetan", the mark registered by the registrant is exactly the same as the trademark ISETAN owned by the petitioner and that the young leaves registered by the registrant is exactly the
same as the young leaves design owned by the petitioner. The petitioner further alleged that respondent's act of registering a trademark which is exactly the same as its trademark and
adopting a corporate name similar to that of the petitioner were with the illegal and immoral intention of cashing in on the long established goodwill and popularity of the petitioner's
reputation, thereby causing great and irreparable injury and damage to it.
The petitioner also invoked the Convention of Paris for the Protection of Industrial Property of which the Philippines and Japan are both members. The petitioner stressed that the
Philippines’ adherence to the Paris Convention committed to the government to the protection of trademarks belonging not only to Filipino citizens but also to those belonging to
nationals of other member countries who may seek protection in the Philippines.
The petitioner also filed with the SEC a petition to cancel the mark "ISETAN" as part of the registered corporate name of Isetann Department Store, Inc., which was denied. On appeal, the
Commission reversed the decision of the Hearing Office. It directed the private respondent to amend its Articles of Incorporation within 30 days from finality of the decision. Later,
respondent filed MR. The Commission reversed its earlier decision thereby affirming the decision rendered by the Hearing Officer. The SEC decision, which denied and dismissed the
petition to cancel was submitted to the Director of Patents. The Director of Patents after notice and hearing rendered a joint decision dismissing the petition holding that petitioner has
not successfully made out a case of cancellation. Respondent's Certificate of Supplemental Registration covering the tradename "ISETANN DEPT. STORE, INC. & FLOWER DESIGN" is
ordered to remain in full force and effect for the duration of their term unless sooner or later terminated by law. The corresponding application for registration in the Principal Register
of the Trademark and of the tradename aforesaid was given due course.
Isetan Company Limited moved for the reconsideration of said decision but motion was denied. From this adverse decision of the Director of Patents, the petitioner appealed to the IAC.
The IAC dismissed the appeal on the ground that it was filed out of time. Petitioner’s MR was likewise denied in a resolution. Hence, this petition.
ISSUE/S: WoN actual use in commerce is a pre-requisite to the acquisition of ownership over a trademark or tradename in the Philippines. YES
RULING: The trademark Law, Republic Act No. 166, as amended, under which this case heard and decided provides:
SEC. 2. What are registrable. Trademark, tradenames and service marks owned by persons, corporation, partnerships or associations domiciled in the Philippines and by persons,
corporations, partnerships or associations domicided in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks,
tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And
provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially
certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines.
(As amended by R.A. No. 865).
SEC. 2-A. Ownership of trademarks, tradenames and service marks; how acquired. Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful
business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a
trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of others. The
ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same
manner and to the same extent as are other property rights known to the law. (As amended by R.A. No. 638)
A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a pre-requisite to the acquisition of the right of
ownership over a trademark. Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. In fact, a prior registrant
cannot claim exclusive use of the trademark unless it uses it in commerce.
Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. The records show that the petitioner has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the very few
who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks. There can be
no question from the records that the petitioner has never used its tradename or trademark in the Philippines.
Any goodwill, reputation, or knowledge regarding the name Isetann is purely the work of the private respondent. Evidence was introduced on the extensive promotional activities of the
private respondent. Isetann Department Store, Inc. is the name of a store and not of product sold in various parts of the country. There is no product with the name "Isetann" popularized
with that brand name in the Philippines. Unless one goes to the store called Isetann in Manila, he would never know what the name means. Similarly, until a Filipino buyer steps inside a
store called "Isetan" in Tokyo or Hong Kong, that name would be completely alien to him. The records show that among Filipinos, the name cannot claim to be internationally well-
known.
The rule is that the findings of facts of the Director of Patents are conclusive on the SC, provided they are supported by substantial evidence. The conclusions of the Director of Patents
are likewise based on applicable law and jurisprudence – what is to be secured from unfair competition in a given territory is the trade which one has in that particular territory. There is
where his business is carried on where the goodwill symbolized by the trademark has immediate value; where the infringer may profit by infringement. Plaintiff itself concedes that the
principle of territoriality of the Trademark Law has been recognized in the Philippines, The law of trademarks “rests upon the doctrine of nationality or territoriality.”
The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its, even though such adoption is publicly
declared, such as by use of the name in advertisements, circulars, price lists, and on signs and stationery.
The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world which have signed it from using a tradename which happens to
be used in one country. The Philippines is a signatory to this Treaty and, hence, must honor its obligation thereunder on matters concerning internationally known or well-known marks.
However, this Treaty provision clearly indicated the conditions which must exist before any trademark owner can claim and be afforded rights such as the petitioner herein seeks and
those conditions are that:
a) the mark must be internationally known or well known;
b) the subject of the right must be a trademark, not a patent or copyright or anything else;
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark
The respondent registered its trademark in 1979. It has continuously used that name in commerce. It has established goodwill through extensive advertising. The people who buy at
Isetann Store do so because of Isetann's efforts. There is no showing that the Japanese firm's registration in Japan or Hongkong has any influence whatsoever on the Filipino buying
public.
Petition is hereby DISMISSED.

30. Philip Morris v. Fortune Tobacco, GR No. 158589, 27 June 2006

31. Shangrila v. DCCI, GR No. 159938, 31 March 2006
32. Shangrila v. DCCI, GR No. 159938, 22 January 2007

33. Societe des Produits Nestle, S.A. v.CA, G.R. No. 112012. April 4, 2001

FACTS: CFC corporation filed with Bureau of Patents a registration of the Trademark   “FLAVOR MASTER” for instant coffee. Petitioner Societe Des Produits Nestle filed an unverified
Notice of Opposition, claiming that the trademark of respondent’s product is confusingly similar to its Trademarks for coffee:  “MASTER ROAST AND MASTER BLEND”. Nestle Philippines
also filed notice of opposition against the registration Petitioners argued that it would cause confusion in trade, or deceive purchasers and would falsely suggest to the public a
connection between the two marks.

ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and MASTER BLEND?

HELD: Yes. The TM sought to be registered is likely to cause confusion.

A trademark has been generally defined as any word, name, symbol, or device adopted and used by a merchant to identify his goods and distinguish them from those sold by others. Such
is entitled to protection Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark or trade-name registered in the Philippines or a mark previously
used and not abandoned WHICH IS LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS. The law prescribes a stringent standard proscribes registration if it
causes confusing similarity, and if it is likely to cause confusion or mistake or deceive purchasers.  Colorable imitation denotes a close imitation as to be calculated to deceive ordinary
persons  as to cause him to purchase the one supposing it to be the other.

In determining colorable imitation there are two tests: Dominancy Test and Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks; the holistic test mandates the entirety of the marks in question must be considered in determining confusing similarity

The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two TMs. The word
MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said term cannot be invalidated as a trademark and therefore, may be protected. Generic
terms are those which constitute the common descriptive name of an article or substance and are not legally protectable. The term MASTER is a suggestive which require imagination,
thought, and perception to reach a conclusion as to the nature of the goods. The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and
Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is likely to cause confusion or mistake.
 34. Del Monte Corporation, et al. v. CA, G.R. No. L-78325. January 25, 1990
35. Asia Brewery v. CA and San Miguel G.R. No. 103543. July 5, 1993
36. McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993. August 18, 2004
37. Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342. July 14, 2004
38. McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra

Doctrine: 
Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable deception on the public because of the
general appearance of the goods. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he
manufactures the goods, thus preventing the public from being deceived that the goods originate from the trademark owner.
Facts:  McDonald's, a global chain of fast-food restaurants, owns a family of trademarks, including the "Big Mac" mark for its "double-decker hamburger sandwich", for which it secured
with the US Trademark Registry in 1979. Based on this Home Registration, McDonald’s applied for the registration of the same mark in the Principal Register of the then Philippine
Bureau of Patents, Trademarks and Technology (“PBPTT”), which was approved in 1985. In the Philippines, McGeorge Food Industries (McGeorge) is the Philippine’s McDonald’s
franchisee. 
L.C. Big Mak Burger, Inc. (“Big Mak”) is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. In 1988, Big Mak applied
with the PBPTT for the registration of the “Big Mak” mark for its hamburger sandwiches. McDonald’s opposed its application on the ground that “Big Mak” was a colorable imitation of its
registered “Big Mac” mark for the same food products. 
Subsequently, McDonald’s sued Big Mak for trademark infringement and unfair competition before the Regional Trial Court (RTC) of Makati City. The RTC issued a Temporary
Restraining Order (TRO) and, later on, a preliminary injunction enjoining Big Mak from using the said mark in the operation of their business in the NCR.  
To counter McDonald’s allegations, Big Mak rebutted that the former does not have an exclusive right to the “Big Mac” mark or to any other similar mark. By way of example,
Big Mak pointed out the Isaiyas Group of Corporatin that registered the same mark for hamburger sandwiches with the PBPTT, and several others companies using similar marks.
Alternatively, they alleged that it is not liable for trademark infringement or for unfair competition, as the “Big Mak” mark they sought to register does not constitute a colorable
imitation of the “Big Mac” mark because they did not fraudulently pass off their hamburger as that of McDonald’s. 
The RTC found that Big Mak was liable for trademark infringement and unfair competition. However, the RTC’s decision was reversed by the Court of Appeals (CA).
Issue: Whether Big Mak is liable for trademark infringement
Ruling: YES, Big Mak is liable for trademark infringement.

Ratio: To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement. In this case, all the elements for trademark infringement are present. First, McDonald’s ownership of the mark “Big Mac” is neither generic nor descriptive. On the contrary,
it falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents; that being the case, the mark is highly
distinctive and, therefore, valid. Second, McDonald’s duly established is ownership of the aforementioned mark, as may be gleaned from the registrations it acquired.  Finally, as to the
element of likelihood of confusion, it must be noted that Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of goods
(product confusion) and confusion of business (source or origin confusion). In this case, there is confusion of goods since the company’s use of the “Big Mak” mark on the same goods –
i.e., hamburger sandwiches. Likewise, there is a confusion of business due to the company’s use of the "Big Mak" mark in the sale of hamburgers, the same business that McDonald’s are
engaged in, also results in confusion of business. 
Furthermore, in determining likelihood of confusion, the Court has relied on the dominancy test over the holistic test. Applying the dominancy test, the company’s use of the
"Big Mak" mark results in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also
phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first
two letters. Therefore, it is liable for trademark infringement.

39. Coca-cola v. Gomez, G.R. No. 154491. November 14, 2008

Facts: CCBPI, the petitioner applied for a search warrant against Pepsi Cola Product Philippines, Inc. (PCPPI) for allegedly hoarding empty bottles of Coke bottles which same act is
punishable under the IP Code, and further claimed that the empty bottles be confiscated. Following the search warrant, the police seized and brought to MTC 2,464 Litro and 4,036 of 12
oz. of empty coke bottle. The petitioner, after seizing the bottles, filed with the Office of the City Prosecutor of Naga a complaint against two Pepsi officers, namely Galicia and Gomez, for
violation of Section 168.3 (c) in relation to Section 170 of the IP Code.
The respondents counter claim was, as represented by Galicia and Gomez, that the bottles came from various Pepsi retailers and wholesalers who included them in their return to make
up for their shortages of empty Pepsi bottles. They also had no way of ascertaining before hand the return of empty coke bottles as they simple received what had been delivered; the
presence of the bottles in their yard was not intentional nor deliberate. The respondents also filed motions for the return of the seized bottles and quash the search warrant for the
warrant itself existed no probable cause to justify the issuance.
The petition was denied, both by the MTC and the RTC. Bypassing the Court of Appeals, the petitioner files a petition for review on certiorari under Rule 45 of the Rules of Court to
reverse the decision of the RTC.

ISSUE: WON Pepsi’s possession of several empty coke bottles constitute as “Hoarding” which is punishable under the IP Code.
HELD: As culled from the petitioner’s allegation, the provision shown below shows the law which Pepsi breached.
SECTION 168. Unfair Competition, Rights, Regulation and Remedies. –

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition,
and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the
wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods
with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another
who has identified such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit
the goods, business or services of another.

168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)

The application of the principles of statutory construction giving particular attention, not so much to the focus of the IP Code generally, but to the terms of Section 168 in particular.
Under the principle of "noscitur a sociis," when a particular word or phrase is ambiguous in itself or is equally susceptible of various meanings, its correct construction may be made
clear and specific by considering the company of words in which it is found or with which it is associated.
As basis for this interpretative analysis, we note that Section 168.1 speaks of a person who has earned goodwill with respect to his goods and services and who is entitled to protection
under the Code, with or without a registered mark. Section 168.2, refers to the general definition of unfair competition. Section 168.3, on the other hand, refers to the specific instances
of unfair competition, with Section 168.1 referring to the sale of goods given the appearance of the goods of another; Section 168.2, to the inducement of belief that his or her goods or
services are that of another who has earned goodwill; while the disputed Section 168.3 being a "catch all" clause whose coverage the parties now dispute.
Under all the above approaches, we conclude that the "hoarding" - as defined and charged by the petitioner - does not fall within the coverage of the IP Code and of Section 168 in
particular. It does not relate to any patent, trademark, trade name or service mark that the respondents have invaded, intruded into or used without proper authority from the
petitioner. Nor are the respondents alleged to be fraudulently "passing off" their products or services as those of the petitioner. The respondents are not also alleged to be undertaking
any representation or misrepresentation that would confuse or tend to confuse the goods of the petitioner with those of the respondents, or  vice versa. What in fact the petitioner alleges
is an act foreign to the Code, to the concepts it embodies and to the acts it regulates; as alleged, hoarding inflicts unfairness by seeking to limit the opposition's sales by depriving it of the
bottles it can use for these sales. Based on the foregoing, we conclude that the RTC correctly ruled that the petitioner's search warrant should properly be quashed for the petitioner's
failure to show that the acts imputed to the respondents do not violate the cited offense. There could not have been any probable cause to support the issuance of a search warrant
because no crime in the first place was effectively charged. This conclusion renders unnecessary any further discussion on whether the search warrant application properly alleged that
the imputed act of holding Coke empties was in fact a "hoarding" in bad faith aimed to prejudice the petitioner's operations, or whether the MTC duly complied with the procedural
requirements for the issuance of a search warrant under Rule 126 of the Rules of Court.
40. Samson v. Judge Daway, GR Nos. 160054-55. July 21, 2004
41. In-N-Out Burger, Inc. v. Sehwani, Inc., G.R. No. 179127. December 24, 2008
42. Manzano v. CA, 278 SCRA 688

FACTS: Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters Patent for a gas burner registered in the name of private respondent Madolaria
who subsequently assigned the same to private respondent United Foundry. Petitioner alleged that the utility model covered by the letters patent was not inventive, new, or useful, the
specification did not comply with the requirements of R.A. No. 165, that respondent was not the original, true, and actual inventor nor did she derive her rights from the same, and that
respondent was guilty of fraud or misrepresentation in applying for the letters patent. Petitioner also alleged that the utility model in question had already been in use and on sale
(petitioner herself being a distributor/seller of the said gas burners) in the Philippines for more than one year before the respondent filed for the application. Petitioner presented two
undated brochures of two different Gas companies (Manila Gas Corp. & Esso Gasul) which allegedly depicts an identical gas burner as the one covered in respondent’s letters patent.
Respondent presented her husband as lone witness to testify that respondent, thru complaints of customers, devised a way to solve the defects in the gas burners, and respondent’s
innovation is now the subject of the letters patent. The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on the ground that petitioner was not able
to convincingly establish that the patented utility model was not novel. Petitioner failed to overcome her burden and overturn the presumption of legality of the issuance of letters
patent and that respondent withheld material facts with intent to deceive which, if disclosed, would have resulted in the refusal by the PPO to issue the letters patent. Hence, this appeal.
ISSUE: WON the CA erred in upholding the decision of the Director of Patents.
RULING: NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her invention novel and patentable. The issuance of such patent creates a presumption
which yields only to clear and cogent evidence that the patentee was the original and first inventor. The burden of proving want of novelty is on him who avers it and the burden is a
heavy one which is met only by clear and satisfactory proof which overcomes every reasonable doubt. As found by the Director of Patents, the standard of evidence sufficient to
overcome the presumption of legality of the issuance of letters patent to respondent Madolaria was not legally met by petitioner in her action for the cancellation of the patent. The
findings and conclusions of the Director of Patent were reiterated and affirmed by the Court of Appeals. The rule is settled that the findings of fact of the Director of Patents, especially
when affirmed by the Court of Appeals, are conclusive on this Court when supported by substantial evidence. The validity of the patent issued by the PPO in favor of private respondent
and the question over the inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are better determined by the PPO. The technical staff of the
Philippine Patent Office composed of experts in their field has by the issuance of the patent in question accepted private respondents model of gas burner as a discovery. There is a
presumption that the Office has correctly determined the patentability of the model and such action must not be interfered with in the absence of competent evidence to the contrary.

43. Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

Petitioner Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes. Petitioner was able to secure a Certificate
of Copyright Registration dated January 20, 1981 over these illuminated display units. The advertising light boxes were marketed under the trademark "Poster Ads". The application for
registration of the trademark was filed with the Bureau of Patents, Trademarks and Technology Transfer on June 20, 1983, but was approved only on September 12, 1988, per
Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising displays.
Sometime in 1985, petitioner negotiated with respondent Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa
was under construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which petitioner agreed.Only the contract for SM Makati, however, was returned signed.
On October 4, 1985, Petitioner wrote respondent inquiring about the other contract and reminding them that their agreement for installation of light boxes was not only for its SM
Makati branch, but also for SM Cubao. SMI did not bother to reply.
Instead, in a letter dated January 14, 1986, SMI's house counsel informed Pearl and Dean that it was rescinding the contract for SM Makati due to non-performance of the terms
thereof. In his reply dated February 17, 1986, Vergara protested the unilateral action of SMI, saying it was without basis. In the same letter, he pushed for the signing of the contract for
SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by petitioner to fabricate its display units, offered to construct light boxes for Shoemart's chain of
stores. SMI approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its contract with Metro Industrial was terminated, SMI
engaged the services of EYD Rainbow Advertising Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were delivered on a staggered basis and installed
at SM Megamall and SM City. Petitioner demanded that respondent suspend the leasing of the light boxes. Claiming that respondent failed to meet all its demands, petitioner filed the
present case for infringement of trademark and copyright, unfair competition and damages.
 In denying the charges hurled against it, SMI maintained that it independently developed its poster panels using commonly known techniques and available technology,
without notice of or reference to Pearl and Dean's copyright. SMI noted that the registration of the mark "Poster Ads" was only for stationeries such as letterheads, envelopes, and the
like. Besides, according to SMI, the word "Poster Ads" is a generic term which cannot be appropriated as a trademark, and, as such, registration of such mark is invalid.
The Makati City RTC ruled in favor of petitioner, founding respondent liable for infringement of copyright and infringement of trademark.
The CA reversed the RTC ruling. The CA held that the light boxes cannot, by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising
copies, labels, tags or box wraps, to be properly classified as a copyrightable work.
Issue: W/N the light box depicted in such engineering drawings ipso facto also protected by such copyright if the engineering or technical drawings of an advertising display unit (light
box) are granted copyright protection (copyright certificate of registration) by the National Library.
Ruling: No. Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, the rights are limited to what the statute confers. It may be obtained and
enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory
enumeration or description.
Section 2 (O) of PD 49 (The Intellectual Property Decree) stated that prints, pictorial illustrations, advertising copies, labels, tags, and box wraps, are among those which are
subject to copyright from the moment of creation. Although petitioner's copyright certificate was entitled "Advertising Display Units" (which depicted the box-type electrical devices),
its claim of copyright infringement cannot be sustained.
Petitioner secured its copyright under the classification class "O" work. This being so, petitioner's copyright protection extended only to the technical drawings and not to the
light box itself because the latter was not at all in the category of "prints, pictorial illustrations, advertising copies, labels, tags and box wraps." Stated otherwise, even as we find that
petitioner indeed owned a valid copyright, the same could have referred only to the technical drawings within the category of "pictorial illustrations." It could not have possibly
stretched out to include the underlying light box.
44. Maguan v. CA, 146 SCRA 107

45. Vargas v. Chua, 57 Phil 206

FACTS: Angel Vargas, the plaintiff herein, brought this action to restrain the appellants (CHUA)and the other defendant entity, Cham Samco & Sons, their agents and mandatories,from
continuing the manufacture and sale of plows similar to his plow described in hispatent No. 1,507,530 issued by the United States Patent Office on September 2, 1924;and to compel all
of said defendants, after rendering an accounting of the profitsobtained by them from the sale of said plows, to pay himdamages equivalent to double the amount of such profits. That the
plaintiff (VARGAS) is the registered owner and possessor of United StatesPatent No. 1,507,530 on certain plow improvements, issued by the United States PatentOffice on September 2,
1924, a certified copy of which was registered in the Bureau ofCommerce and industry of the Government of the Philippine Islands on October 17,1924. A certified copy of said patent is
attached to this stipulation of facts as Exhibit A.
The parties agree that the defendant Coo Teng Hee, doing business under the nameof Coo Kun & Sons Hardware Co., has been selling to his customers in his store on J.Ma. Basa Street in
Iloilo, plows of the kind, type and design represented by Exhibits B, B1 and B-2, having bought said plows from his codefendant, Petronila Chua, whomanufactures them in her factory on
Iznart Street, Iloilo., the plaintiff herein, through his attorneys Paredes, Buencamino & Yulo, sent byregistered mail to the herein defendant, Coo Kun & Sons Hardware Co., at Iloilo,
theoriginal of the letter Exhibit E, which was received by it on September 28, 1927, according to the receipt marked Exhibit E-1 attached hereto. That the plows manufactured by the
plaintiff in accordance with his patent, Exhibit A,are commonly known to the trade in Iloilo, as well as in other parts of the Philippines, as"Arados Vargas", and that the plaintiff is the sole
manufacturer of said plows. A sampleof these plows is presented as Exhibit F.
ISSUE: Whether the plow, Exhibit F, constitutes a real invention or an improvement for which a patent may be obtained, or if, on the contrary, it is substantially the same plow
represented byExhibit 3-Chua the patent for which was declared null and void in the aforementioned case ofVargas vs. F. M. Yaptico & Co., supra.
HELD: The plow upon which the appellee's contention is based, does not constitute aninvention and, consequently, the privilege invoked by him is untenable and the patentacquired by
him should be declared ineffective.The judgment appealed from is hereby reversed and the appellants are absolved fromthe complaint, with costs of this instance against the appellee. So
ordered.

46. Frank v. Kosuyama, 59 Phil. 206

FACTS:
This action is brought by the plaintiffs herein originated from patent no. 1519579 on improvement of hemp stripping machines issued by the US Patent Office and registered in the
Bureau of Commerce and Industry of the Philippines and such the plaintiff prayed for the judgment be rendered against defendant, ordering the defendant to refrain from the sale of
similar machine, to render an accounting of profit and said defendant be sentenced to pay costs and damages that plaintiff might be able to prove.

Plaintiffs alleged that there is infringement committed by the defendant of the rights and privileges acquired by the former over the aforesaid patent through the manufacture and
sale by the machines similar to that covered by the patent.The plaintiffs appealed from the judgment rendered by the trial court dismissing their complaint, with costs, as well as the
defendant's counterclaim of P10, 000. The defendant did not appeal.

Moreover, plaintiffs alleged that their hemp stripping machines, for which they obtained a patent, have the following characteristics: "A stripping head, a horizontal table, a stripping
knife supported upon such table, a tapering spindle, a rest holder adjustably secured on the table portion, a lever and means of compelling the knife to close upon the table, a pallet or
rest in the bottom of the table, a resilient cushion under such pallet or rest."

Despite the fact they filed an amended complaint from which the "spindle" or conical drum, which was the only characteristic feature of the machine mentioned in the original
complaint, was eliminated, the plaintiffs insisted that the said part constitutes the essential difference between the machine in question and other machines and that it was the principal
consideration upon which their patent was issued.

ISSUE:
1. Whether or not the hemp stripping machine of the plaintiffs constitutes an invention
2. Whether or not the defendant can be held civilly liable for an alleged infringement.
RULING:

1. Strictly speaking, the hemp stripping machine of the plaintiffs does not constitute an invention on the ground that it lacks the elements of novelty, originality and precedence. In
fact, before the plaintiffs herein obtained their patent, they themselves had already publicly used the same kind of machine for some months, at least, and, various other
machines, having in general, the same characteristics and important parts as that of the said plaintiffs, were known in the Province of Davao.Notwithstanding all the facts
herein stated, the trial court did not annul the plaintiffs' patent and the defendant herein insists that the patent in question should be declared null and void. In view of the
nature of 'the action brought by the plaintiffs, annulment does not lie in the absence of a cross complaint to that effect.

2. The defendant cannot be made civilly liable for alleged infringement of the patent on which the action is based on the ground that the machines manufactured and sold by him
did not have any essential part unknown to the public in the Province of Davao at the time the plaintiffs applied for and obtained their patent for improved abaca stripping
machines.

47. Aguas v. de Leon, 111 SCRA 238

Facts: De Leon invented a new and useful improvements in the process of making mosaic pre-cast tiles, which was patented, and the petitioner infringed the same by making, using and
selling tiles embodying said patent invention.
Issue: WON De Leon’s “improvement of the process of making mosaic pre cast tiles is patentable?
Ruling: The law under RA 165 provides: “any invention of a new and useful machine, manufactured product or substance, process, or an improvement of the foregoing, shall be
patentable.” In this instance, the respondent’s process of title making consist of improvement in the new critical depth, lip width, easement and field of designs of the new tiles which are
suitable for, construction and ormentation, that has not been achieved by the tiles made out of the old process the tiles are more durable, and provided a certain critical depth
maintained in relation to the dimension of the tiles. Thus, his improvements are patentable

48. Manzano v. CA, 278 SCRA 688

49. Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204

Facts: Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing hydrocarbons in a manner unknown in naturally occurring organisms using recombinant
DNA processes.The microorganisms exhibited great promise in the treatment of oil spills. Plaintiff applied for a patent, which was denied by the Patent Office (Defendant) on the basis
that the microorganisms were products of nature and therefore unpatentable.The Board of Appeals affirmed.The Court of Customs and Patent Appeals reversed, and the United States
Supreme Court granted review.
Issue: May a live, man-made microorganism be patented?
Held. (Burger, C.J.) Yes.A live, man-made microorganism is a non-naturally occurring composition and therefore may be patented.Resolution of this issue is, regardless of its
philosophical implications, strictly a matter of statutory construction.The relevant statute here, 35 U.S.C. 101, defines as patentable any new and useful manufactureor composition of
matter,among other things.It is a basic rule of construction that words are given their natural, ordinary meanings.There can be little doubt that microorganisms produced by
recombinant DNA technology may be said to be manufactured and to be compositions of matter.For purposes of patent law, the fact they are alive is not relevant.Although it is true that
naturally-occurring products may not be patented, a genetically-engineered microorganism is not naturally occurring. While this Court recognizes that recombinant DNA technology is a
controversial field, it is ill-equipped to balance the competing values and interests manifested therein; this is a task for Congress.Since the patent laws clearly include materials such as
are at issue here within their scope, and no specific law exists to exclude it, the only appropriate holding is that recombinant DNA-produced microorganisms are patentable. Affirmed.

50. Boothe v. Director of Patents, 95 SCRA 446

51. Schuartz v. CA, 335 SCRA 493 (2000)
52. Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
53. Parke Davis & Co. v. Doctor’s Pharmaceuticals, 124 SCRA 115

FACTS: Parke Davies and Company is an owner of a Patent entitled "Process for the Manufacturing of Antibiotics" (Letters Patent No. 50) which was issued by the Philippine Patent
Office on February 9, 1950. The patent relates to a chemical compound represented by a formula commonly called chloramphenicol. The patent contains ten claims, nine of which are
process claims, and the other is a product claim to the chemical substance chloramphenicol. Doctors’ Pharmaceuticals Inc. requested that it be granted a voluntary license to
manufacture and produce our own brand of medicine, containing chloramphenicol, and to use, sell, distribute, or otherwise dispose of the same in the Philippines under such terms and
conditions as may be deemed reasonable and mutually satisfactory, which Parke Davies declined. Doctors’ Pharmaceuticals Inc. filed a petition with the Director of Patents requesting
the Director to grant a compulsory license. After careful evaluation and hearings, the Director granted the request of Doctors’ Pharmaceuticals.

ISSUE: Is the decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol, valid?

HELD: Yes. The decision of the Director of Patents in granting Doctor’s Pharmaceutical Inc. compulsory license to use the substance chloramphenicol is valid. The Supreme Court says
that patents issued to foods and medicines are not exclusive so as not to prevent the building up of patent monopolies. Public benefit is foremost. The Court dismissed the contention of
Parke Davies that the Director of Patents erred in granting compulsory license. The decision appealed from is affirmed, with costs against petitioner.

54. Vargas v. F.M. Yaptico, supra

55. Frank v. Benito, 51 Phil. 712
56. Frank v. Kosuyama, 59 Phil. 206
57. G. Sell v. Yap Jue, 12 Phil. 519
58. Maguan v. CA, 146 SCRA 107

Doctrine: A patentee shall have the exclusive right to make, use and sell the patented article or product and the making, using, or selling by any person without the authorization of the
patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring an action before the proper CFI now (RTC) and to
secure an injunction for the protection of his rights.
Facts:
Maguan is doing business under the firm name and style of SWAN MANUFACTURING" while Luchan is likewise doing business under the firm name and style of "SUSANA
LUCHAN POWDERPUFFMANUFACTURING.”Maguan informed Luchan that the powder puffs Luchan is manufacturing andselling to various enterprises particularly those in the
cosmetics industry, resemble Identical orsubstantially Identical powder puffs of which she (Maguan) is a patent holder under RegistrationCertification Nos. Extension UM-109,
ExtensionUM-110 and Utility Model No. 1184.
Maguan explained such production and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded, otherwise it will be compelled
totake judicial action. Luchan replied stating that her products are different and countered that Maguan’s patents are void because the utility models applied for were not new and
patentable and the person to whom the patents were issued was not the true and actual author nor were her rights derived from such author. Maguan filed a complaint for damages with
injunction and preliminary injunction against Luchan with the then Court of First Instance of Rizal. The trial court issued an Order granting the preliminary injunction prayed for.
Consequently, the corresponding writ was subsequently issued.

Issue: Whether or not Maguan has a right to file an action before the CFI for injunction due to infringement of herpatent.
Ruling: Yes.
Rationale: When a patent is sought to be enforced, the questions of invention, novelty or prior use, and each of them, are open to judicial examination. Under the present Patent Law,
there is even less reason to doubt that the trial court has jurisdiction to declare the patents in question invalid.A patentee shall have the exclusive right to make, use and sell the patented
article or product and the making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A. 165).Any patentee whose
rights have been infringed upon may bring an action before the proper CFI now (RTC) and to secure an injunction for the protection of his rights.The burden of proof to substantiate a
charge of infringement is with the plaintiff. But where the plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie presumption of its
correctness and validity. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The burden of going forward with the evidence
(burden of evidence)then shifts to the defendant to overcome by competent evidence this legal presumption.
59. Godines v. CA, 226 SCRA 338

FACTS:
1. The patent involved in this case is Letters Patent No. UM-2236, issued by the Philippine Patent Office to one Magdalena S. Villaruz, which covers a utility model for a hand
tractor or power tiller.
2. The patent was acquired by SV-Agro Industries Enterprises, Inc., private respondent, from Magdalena Villaruz, by virtue of a Deed of Assignment executed by the latter in its
favor.
3. Subsequent thereto, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation.
4. In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them.
5. Thereafter, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboangadel Sur branch. Upon investigation, it discovered that power tillers similar
to those patented by private respondent were being manufactured and sold by petitioner.
6. Private respondent notified Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. When petitioner failed to
comply with the demand, SV-Agro Industries filed before the RTC a complaint for infringement of patent and unfair competition.
7. RTC found Godines liable for infringement of patent and unfair competition. CA affirmed. Thus, this petition.
8. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he
made them only upon the special order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and
that those made by him were different from those being manufactured and sold by private respondent.

ISSUE: WON petitioner's product infringed upon the patent of private respondent?- YES

RULING:
1. Tests have been established to determine infringement:
(a) Literal infringement; and
(b) Doctrine of equivalents.
2. In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is
made out and that is the end of it."To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the
patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements
3. Petitioner's argument that his power tillers were different from those of private respondent's is that of a drowning man clutching at straws.
4. Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the doctrine of
equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement.
5. Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result." The reason for the doctrine of
equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and
useless thing. Such imitation would leave room for, and indeed encourage the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the
patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law.
6. To establish an infringement, it is not essential to show that the defendant adopted the device or process in every particular; Proof of an adoption of the substance of the thing
will be sufficient.
7. The law will protect a patentee against imitation of his patent by other forms and proportions. If two devices do the same work in substantially the same way, and accomplish
substantially the same result, they are the same, even though they differ in name, form, or shape.
8. Petitioner is thus liable for infringement in accordance with Section 37 of Republic Act No. 165, as amended, as well as for unfair competition in accordance with Section 29 of
Republic Act No. 166, as amended.

60. Del Rosario v. CA, 255 SCRA 152

61. Smith Kline v. CA, 409 SCRA 33 (2003)
 62. Creser Precision System, Inc. v. CA, 286 SCRA 13
63. Price v. United Laboratories, 166 SCRA 133 (1988)
64. Smith Kline v. CA, 276 SCRA 224 (1997)
65. Smith Kline v. CA, 368 SCRA 9

Facts: Smith Kline (Petitioner) is the assignee of Letters Patent No. 12207 covering the pharmaceutical product Cimetidine. Said patent was issued by the BPTTT to Graham John Durant,
John Collin Emmett and Robin Genellin on November 29, 1978. On August 1989, Danlex Research Laboratories (Private Respondents) petitioned before Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) that it may be granted a compulsory license for the use and manufacture of the pharmaceutical product  Cimetidine. Cimetidine is useful as an
antihistamine and in the treatment of ulcers. Cimetidine is originally patented to Smith Kline and French Laboratories in 1978, and the said patent is still in force at the time of
application by Danlex Research.

Petitioner opposed the petition for compulsory license, arguing that the private respondent had no cause of action and failed to allege how it intended to work the patented product.
Petitioner further stated that its manufacture, use and sales of Cimetidine satisfied the needs of the Philippine market, hence, there was no need to grant a compulsory license to private
respondent to manufacture, use and sell the same. Finally, petitioner also claimed that the grant of a compulsory license to private respondent would not promote public safety and that
the latter was only motivated by pecuniary gain

The BPTTT granted the application of Danlex Research together with a provision that Danlex Research should be paying 2.5% of the net wholesale price as royalty payment to Smith
Kline. This was affirmed by the Court of Appeals.Smith Kline assailed the grant as it argued, among others, that the same is an invalid exercise of police power because there is no
overwhelming public necessity for such grant considering that Smith Kline is able to provide an adequate supply of it to satisfy the needs of the Philippine market; that a provision in the
Philippine Patent Laws is violative of the Paris Convention to which the Philippines is a signatory.To explain the second contention, Smith Kline states that the Paris Convention only
allows compulsory licensing if the original licensee (patent holder) has failed to work on the patent; that therefore, the provision in the Philippine Patent Laws which adds other grounds
for the granting of compulsory license i.e. monopoly, is invalid and contrary to the Paris Convention.

ISSUES: Whether or not the grant of the compulsory license is proper.

HELD: Yes. The grant of the compulsory license satisfies the requirements of the foregoing provision. More than ten years have passed since the patent for  Cimetidine was issued to
petitioner and its predecessors-in-interest, and the compulsory license applied for by private respondent is for the use, manufacture and sale of a medicinal product. Furthermore, both
the appellate court and the BPTTT found that private respondent had the capability to work Cimetidine or to make use thereof in the manufacture of a useful product.
66. Albana v. Director of Patents, 93 Phil. 113

FACTS: An application for patent was filed with the Patent Office.Pending examination of the application, Albañ a filed a motion to intervene claiming that the applicant-inventors had
"sold and/or bartered and assignedto him their right to contract or deal the sale of their invention called Fel-Tap Meter Guard and Detector to or through the Corporation that they were
then organizing under his direction and to fix and decide on the purchase price of it and praying that applicant-inventors,Tapinioand Feliciano, to sign the contract and the
samecontracts be recorded in the Patent Office and in the office of the Register of Deeds, and that the patent for the invention be issued in his name and in the name of the inventors.

The motion was denied on the ground that under the provisions of the Patent Law the Director of Patents has no jurisdiction or power to decide the question submitted to him. The
movant filed an amended motion to intervene claiming "that he is the assignee of inventors Tapinio and Feliciano of an undivided part interests in the invention for whose letter-patent
the named petitioners Tapinio and Felicianoare herein applying."

The amended motion was denied on the ground that the assignment made to the movant is not one of exclusive right to make, use and sell the electrical contrivance for which patent is
applied for ; that it is just an authority to act as the selling agent for the inventors of the patent, if granted, and the invention covered thereby and to receive compensation therefor; and
that not being entitled to have his name included as one of the patentees, if patent for the invention be granted, the movant has no right to intervene in the proceedings for the grant of
the patent.An exception to and a motion for reconsideration of the preceding order were noted and denied.From the orders denying his motions to intervene the movant has appealed.
Hence, this petition.

ISSUE: Whether or not the Director of Patents has power and authority to compel the applicant-inventors to do what the movant is asking them to perform.
RULING: No. Assignments of patents and inventions covered thereby may be recorded in books and records kept for the purpose in the Patent Office if presented in due form (Republic
Act 165, sections 51-53). But where a person other than the inventor files a motion with the Director of Patents praying that the applicant-inventor be compelled to sign the contract
executed by a co-applicant-inventor and both applicant-inventors to acknowledge it before a notary public as well as another document which refers to the minutes of a meeting of the
organizers of a manufacturing corporation, and then to have both documents recorded in the Patent Office and in the office of the registrar of deeds, the Director of Patents has no power
and authority to compel the applicant-inventors to do what the movant is asking them to perform. What the movant asks the Director of Patents to do for him is essentially a judicial
function which would require the determination of finding by a court of competent jurisdiction as to whether there was a meeting of the minds of the contracting parties before it could
compel any of them to perform what the movant prays the court to order him to do.